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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. WhoisGuard Protected / james hemingway

Case No. D2018-2942

1. The Parties

The Complainant is Accor of Issy-Les-Moulineaux, France, represented by Dreyfus & associés, France.

The Respondent is WhoisGuard Protected of Panama, Panama / james hemingway of Singapore.

2. The Domain Name and Registrar

The disputed domain name <accorrhotel.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 31, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 30, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a leading global hotel operator. The Complainant was founded in 1967 and currently has more than 4,500 hotels in 109 countries around the world. The Complainant’s group includes many well-known hotel chains such as Fairmont, Raffles, Swissôtel, Sofitel, Pullman, Novotel, Grand Mercure and Ibis.

The Complainant operates websites from the domain names <accor.com> and <accorhotels.com>.

The Complainant also owns various trade mark registrations around the world for ACCOR and ACCORHOTELS, protected particularly in relation to hotels and restaurants. They include:

(i) European Union trade mark No. 010248466 for ACCORHOTELS, registered on March 20, 2012;

(ii) International trade mark No. 742032 for ACCOR, registered on August 25, 2000 and renewed, designating, inter alia, China, Germany, Egypt, Italy and Russian Federation; and

(iii) International trade mark No. 1103847 for ACCORHOTELS, registered on December 12, 2011, designating, inter alia, Australia, China, Russian Federation, Singapore and the United States of America.

The disputed domain name was registered on September 23, 2018.

Initially, the disputed domain name redirected towards an online hotel booking website.

On September 25, 2018, the Complainant sent a notification to the Registrar requesting that the disputed domain name be blocked. No response was obtained despite several reminders. However, after sending the notification to the Registrar, the Complainant noticed that the website hosted at the dispute domain name which redirected to a competitor booking site was deactivated. This website was later reactivated.

At present, the domain name directs towards a page entitled “ACCORR HOTEL” which is related to the booking of “luxury rooms” and which also appears to contain an online booking system.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The disputed domain name is identical or confusingly similar to the Complainant’s ACCOR and ACCORHOTELS marks in which the Complainant has registered rights (“the Complainant’s ACCOR Mark” and “the Complainant’s ACCORHOTELS Mark”; together, “the Complainant’s Marks”). In particular:

1.1 the disputed domain name substantially imitates the Complainant’s trade marks;

1.2 the Respondent’s registration of the disputed domain name <accorrhotel.com> reproduces the Complainant’s ACCOR Mark with the addition of the letter “r” and the generic term “hotel”, which is insufficient to avoid any likelihood of confusion;

1.3 the disputed domain name <accorrhotel.com> consists of a deliberate misspelling of the Complainant’s ACCORHOTELS Mark as the letter “r” has been added to the term “Accor”; and

1.4 the disputed domain name creates a likelihood of confusion with the Complainant’s Marks, meaning that the public is likely to believe that the disputed domain name is owned by, or affiliated to, the Complainant, and

1.5 email servers have been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular:

2.1 the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use or register the Complainant’s Marks, or to seek registration of any domain name incorporating the Complainant’s Marks;

2.2 the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the Complainant’s Marks preceded the registration of the disputed domain name by several years;

2.3 there is no evidence that the Respondent is commonly known by either of the Complainant’s Marks;

2.4 the Respondent cannot assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy;

2.5 the disputed domain name is so confusingly similar to the Complainant’s well-known Marks that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain name <accorrhotel.com>; and

2.6 the Respondent cannot assert that it has made or is currently making legitimate non-commercial or fair use of the disputed domain name and has not used the disputed domain name in connection with a bona fide offering of goods or services.

3. The disputed domain name was registered and is being used in bad faith. In particular:

3.1 given that the Complainant and the Complainant’s Marks are well-known throughout the world, it is inconceivable that the Respondent was unaware of the Complainant when the Respondent registered the disputed domain name;

3.2 given that the Complainant and the Complainant’s Marks are well-known, the composition of the disputed domain name using two of the Complainant’s Marks clearly demonstrates the Respondent’s knowledge of the Complainant’s rights and its activities;

3.3 the registration of the disputed domain name which is confusingly similar to the Complainant’s ACCORHOTELS Mark with the addition of an extra letter “r” is a form of typosquatting;

3.4 given the Complainant’s goodwill and renown, and the nature of the disputed domain name, the Respondent could not have simply chosen the disputed domain name for any reason other that to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of the Complainant’s goodwill and reputation; and

3.5 by using the disputed domain name, the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 5(f) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence if exceptional circumstances, the Panel shall decide the dispute based upon the complaint.

A. Identical or Confusingly Similar

The Complainant has submitted evidence demonstrating its right in the ACCOR and ACCORHOTELS marks and its ownership and operation of the domain names <accor.com> and <accorhotels.com>.

The disputed domain name fully incorporates the Complainant’s ACCOR Mark. UDRP Panels have previously held that domain names are identical or confusingly similar to a trade mark for the purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 and Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150. Therefore, the addition of the generic term “hotels” to the Complainant’s ACCOR Mark does not provide any distinctiveness to the disputed domain name, especially considering that its addition brings the disputed domain name very close to the Complainant’s ACCORHOTELS Mark and to the Complainant’s domain name <accorhotels.com>.

The disputed domain name <accorrhotel.com> is almost identical to the Complainant’s Marks, save for the addition of a letter “r” at the end of “accor”. It is well-established in UDRP precedent that a minor variation to a trade mark, such as the addition of a letter, is insufficient to avoid confusing similarity (General Motors LLC v. Carol Schadt, WIPO Case No. D2012-2106).

The Panel accepts that the generic Top-Level Domain (“gTLD”) suffix in the disputed domain name (“.com”) should not be taken into consideration when examining the similarity between the disputed domain name and the Complainant’s Marks since it is a functional element (VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 and; Accor v Noldc, Inc., WIPO Case No. D2005-0016).

In light of the above, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights, and therefore satisfies paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not been granted any license or been authorised by the Complainant in any way to use or register the Complainant’s Marks or to seek registration of any domain name incorporating the Complainant’s Marks.

Further, the Complainant has provided sufficient evidence to suggest that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name as the content of the website at the dispute domain name appears to be intended to suggest that it is affiliated with the Complainant’s business and thus divert Internet users who are in fact seeking the Complainant’s website.

The Complainant has made out a prima facie case that the Respondent lacks any legitimate interests in the disputed domain name. The burden of production on this element of the Policy therefore shifts to the Respondent, who must rebut the prima facie case.

The Respondent has not submitted any response to the Complaint. Under paragraph 14(b) of the Rules, if a respondent fails to comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

For the reasons above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and therefore satisfies paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered in bad faith because, amongst other reasons, the Respondent should have known about the Complainant’s Marks, and its reputation worldwide means that the Respondent would have known about the Complainant’s Marks. The Panel accepts that the Respondent would likely have been aware of the Complainant’s Marks, not least because they are a large international hotel chain which is well-known. This has previously been grounds for UDRP Panels to find registration in bad faith (The Gap, Inc v. Deng Youqian, WIPO Case No. D2009-0113). Furthermore, the similarity to the Complainant’s Marks and domain names, with the seemingly intentional insertion of an extra letter “r”, shows that the Respondent in all likelihood was aware of the Complainant and deliberately registered the disputed domain name in order to create a resemblance to the Complainant’s Marks or domain names.

The disputed domain name currently resolves to a website which provides a booking form which attempts to lead users to believe that they are using a bona fide website belonging to the Complainant. The motivation for such use is very likely to be for financial gain to be derived from pop-up advertising (which appears when users navigate to the disputed domain name) and from data-harvesting in relation to those who attempt to use the booking form.

Paragraph 4(b)(iv) of the Policy states that registration and use in bad faith can be evidenced by intentionally attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s marks as to the source of the website. There is a clear inference in this case that this was the intention of the Respondent when registering the disputed domain name and using it in the manner described above.

In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and therefore paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <accorrhotel.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: February 1, 2019.

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